303 Who May Oppose or Petition to Cancel
303.01 In General
Trademark Act § 13(a), 15 U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.
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Trademark Act § 14, 15 U.S.C. § 1064 A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905.
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Trademark Act § 24, 15 U.S.C. § 1092 Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--
- (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
- (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration. ...
Trademark Act § 45, 15 U.S.C. § 1127 In the construction of this chapter, unless the contrary is plainly apparent from the context--
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Person, Juristic Person. The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any non-governmental entity.
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37 C.F.R. § 2.2(b) Entity as used in this part includes both natural and juristic persons.
37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. …
37 C.F.R. § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
303.02 Meaning of the Term "Person"
The term "person," as used in the Trademark Act, includes both natural and juristic persons. [ Note 1.] A juristic person is a "firm, corporation, union, association, or other organization capable of suing and being sued in a court of law." [ Note 2.]
If an operating division of a corporation is not itself incorporated or is not otherwise a legal entity which can sue and be sued, it does not have legal standing to own a mark or to file an application for registration, an opposition, or a petition for cancellation. [ Note 3.] See TMEP § 1201.02(d) ("An operating division’s use is considered to be use by the applicant…."). In such a case, the application, opposition, or petition for cancellation should be filed in the name of the corporation of which the division is a part. If an opposition or a petition for cancellation is filed in the name of a division, and there is no indication that the division is incorporated, where the issue is presented in connection with a discovery conference or a motion, the Board may inquire as to whether the division is incorporated or is otherwise a legal entity that can sue and be sued. If the opposer or petitioner responds in the negative, the opposition or petition for cancellation will go forward in the name of the corporation of which the division is a part. [ Note 4.] See TMEP § 1201.02(d).
The term "person" as used in the Trademark Act also includes the United States, any agency and instrumentality thereof, or any individual, firm or corporation which acts for the United States and with the authorization and consent of the United States, as well as any state, any instrumentality of a state, and any officer or employee of a state or instrumentality of a state acting in his or her official capacity. [ Note 5.]
NOTES:
1. Trademark Act § 45, 15 U.S.C. § 1127. Cf. 37 C.F.R. § 2.2(b).
2. Trademark Act § 45, 15 U.S.C. § 1127. See Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1475 (Fed. Cir. 1992) (a "person" may be a corporation or other entity); Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 720-21 (CCPA 1969) (a corporation is a "person" within the meaning of Trademark Act § 45, 15 U.S.C. § 1127, and can base an opposition on Trademark Act § 2(a), 15 U.S.C. § 1052(a)); Aruba v. Excelsior Inc., 5 USPQ2d 1685, 1686 n.2 (TTAB 1987) (Commonwealth of Aruba is a "person" within the meaning of Trademark Act §§ 13 and 45, 15 U.S.C. §§ 1063 and 1127); U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254, 1257 (TTAB 1987) (U.S. Navy is a juristic person within the meaning of Trademark Act § 45, 15 U.S.C. § 1127); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 410 n.6 (TTAB 1986) (Alabama Board of Trustees, a corporate body, may be considered either a "person" or an "institution" within the meaning of Trademark Act § 2(a), 15 U.S.C. § 1052(a)); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 754 n.2 (TTAB 1985) (corporations as well as individuals are "persons" for purposes of Trademark Act § 2(a),15 U.S.C. § 1052(a)); In re Mohawk Air Services Inc., 196 USPQ 851, 855 (TTAB 1977) (a government agency is a juristic person and as such may file an application for registration, an opposition, or a petition for cancellation).
3. See In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986).
4. Cf. In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986) (because applicant was merely a division, Board noted that should it ultimately prevail, "this defect may be corrected by an amendment supported by a verification or declaration by the real applicant").
5. Trademark Act § 45, 15 U.S.C. § 1127.
303.03 Meaning of the Term "Damage"
The term "damage," as used in Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063 and 15 U.S.C. § 1064, concerns specifically a party’s entitlement to a statutory cause of action (previously referred to as "standing") to file an opposition or a petition to cancel, respectively. [ Note 1.] A party may establish its entitlement to oppose or to petition to cancel by showing (1) that it is within the zone of interests protected by the statute (i.e., has a "real interest" in the outcome of the proceeding) and (2) damage proximately caused by registration (i.e., a reasonable basis for its belief in damage). [ Note 2.] See TBMP § 309.03(b). To plead an interest within the "zone of interests" a plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. [ Note 3.] There is no requirement that a plaintiff show a personal interest in the proceeding different from or "beyond that of the general public" in order to establish its entitlement to a statutory cause of action. [ Note 4.] There is also no requirement that actual damage be pleaded or proved in order to establish an entitlement to a statutory cause of action or to prevail in an opposition or cancellation proceeding. [ Note 5.] However, the allegations in support of plaintiff’s belief of damage must have a "reasonable basis in fact." [ Note 6.]
For a discussion of entitlement to a statutory cause of action, see TBMP § 309.03(b).
NOTES:
1. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020),cert. denied, 142 S. Ct. 82 (2021); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 n.2 (Fed. Cir. 1999) (construing standing requirements of Trademark Act § 13, 15 U.S.C. § 1063, regarding oppositions and Trademark Act § 14, 15 U.S.C. § 1064 regarding cancellations consistently); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 n.34 (TTAB 2020); Major League Soccer, LLC v. F.C. International Milano S.p.A., 2020 USPQ2d 11488, at *5 n.18 (TTAB 2020); Spanishtown Enterprises., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *1-2 (TTAB 2020).
2. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
3. See Ahal Al-Sara Group for Trading v. American Flash, Inc., 2023 USPQ2d 79, at *4-10 (TTAB 2023) (motion to dismiss granted because plaintiff failed to identify an interest that falls within the "zone of interests of the Trademark Act" and thus failed to sufficiently plead its entitlement to a statutory cause of action; plaintiff allowed time to replead).
4. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092; 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) ("The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue"). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
5. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1052 (Fed. Cir. 1983); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976); Universal Oil Products Co. v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972).
See also Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1062 (TTAB 2010) ("no requirement that any actual damage be pled or proved to establish standing"); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (plaintiff does not have to prove claims or ‘actual damage’ to establish standing); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1384 (TTAB 1991); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990); Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976 (TTAB 1988); Aruba v. Excelsior Inc., 5 USPQ2d 1685, 1686 (TTAB 1987); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1077 (TTAB 1987); BRT Holdings Inc. v. Homeway, Inc., 4 USPQ2d 1952, 1956 (TTAB 1987); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 801 (TTAB 1984); Davco Inc. v. Chicago Rawhide Manufacturing Co., 224 USPQ 245, 246 (TTAB 1984).
6. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972) and stating that the belief of damage alleged by plaintiff must be more than a subjective belief); McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1215 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. July 11, 2007), cert. denied, 552 U.S. 1109 (2008).
303.04 Federal Trade Commission
Trademark Act § 14, 15 U.S.C. § 1064 Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required.
The proviso at the end of Trademark Act § 14, 15 U.S.C. § 1064, provides statutory standing for the Federal Trade Commission to cancel a registration on the Principal Register on the grounds specified in paragraphs (3) and (5) of the section. [ Note 1.]
For information concerning the grounds for cancellation specified in paragraphs (3) and (5) of Trademark Act § 14, 15 U.S.C. § 1064, see TBMP § 307.01.
NOTES:
1. See Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641, 647 (CCPA 1979); Federal Trade Commission v. Formica Corp., 200 USPQ 182, 191 (TTAB 1978).
303.05 Opposition Filed During Extension of Time to Oppose
37 C.F.R. § 2.102(a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition.
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37 C.F.R. § 2.102(b) A request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time must be in the name of the person to whom the extension was granted, except that an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.
303.05(a) General Rule
An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. [ Note 1.] For this reason, an opposition filed during an extension of time to oppose ordinarily must be filed in the name of the party to which the extension was granted. [ Note 2.] Cf. TBMP § 206.02. An opposition filed in a different name will be accepted only if the opposition is filed by a person in privity with the person granted the extension of time or if the person that requested the extension was misidentified through mistake. [ Note 3.]
NOTES:
1. See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (a party cannot claim the benefit of an extension granted to another, unrelated party).
2. See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities share same objection is not a basis for finding privity).
3. See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may claim the benefit of an extension granted to another named entity").
303.05(b) Opposition Filed by Privy
A party in privity with a potential opposer may step into the potential opposer’s shoes and file a notice of opposition or may join with the potential opposer as a joint opposer. [ Note 1.] Thus, an opposition filed during an extension of time to oppose may be filed by a party other than the party to which the extension was granted, if it is shown to the satisfaction of the Board that the differing party is in privity with the party granted the extension. [ Note 2.] Cf. TBMP § 206.02.
The "showing" of privity should be in the form of a recitation of the facts on which the claim of privity is based, and must be submitted with the opposition. When a party filing an opposition differs from the name of the party identified in the extension of time to oppose, ESTTA will prompt the filer to provide an explanation.
If the opposition is filed both in the name of the party granted the previous extension and in the name of one or more differing parties, an explanation will be requested as to each differing party, and the opposition will not be accepted as to any differing party that fails to make a satisfactory showing of privity. ESTTA will prompt the filer to provide an explanation.
Once a timely notice of opposition has been filed, and the time for opposing has expired, the right to pursue the filed case is a right individual to the timely filer. While this right may be transferred to another party, as by an assignment of the mark with the associated goodwill, it may not be shared. [ Note 3.]
For information concerning the meaning of the term "privity," see TBMP § 206.02.
NOTES:
1. See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee, as party in privity with opposer, could have joined opposer in filing opposition during extension of time to oppose; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980).
2. See 37 C.F.R. § 2.102(b); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1669-70 (TTAB 2015) (individual employee that filed extension request not in privity with employer who filed notice of opposition); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee considered to be in privity with licensor; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed). Cf. In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities are using marks similar to that for which application has been made and that both have been named defendants in civil actions brought by the owner of the mark in question is not a basis for finding privity); In re Spang Industries, 225 USPQ 888, 888 (Comm’r Pats. 1985) (attorney/client relationship does not invest the attorney with same right or interest as his client).
3. See SDT, Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (opposer’s licensee, having failed to join opposer in filing opposition during extension of time to oppose, cannot be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (extension of time granted to opposer does not inure to the benefit of unrelated third party, despite its sharing of a common interest with opposer vis-à-vis applicant’s mark). Cf. Leading Jewelers Guild, Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1901 n.1(TTAB 2007) (substitution allowed following assignment); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (motion to amend complaint to substitute sole owner of company as real party in interest for opposer company granted); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (substitution of opposer allowed where notice of opposition named non-existing entity that had transferred rights to opposer prior to filing of opposition). See also Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office).
303.05(c) Misidentification of Opposer
If the name of the opposer, in an opposition filed during an extension of time to oppose, differs from the name of the party to which the extension was granted, the opposition will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was "misidentified through mistake." [ Note 1.]
The phrase "misidentified through mistake," as used in 37 C.F.R. § 2.102(b), means a mistake in the form of the opposer’s name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named. [ Note 2.] See TBMP § 512.04.
The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts on which the claim of misidentification through mistake is based, and must be submitted with the opposition. ESTTA will prompt the filer to provide an explanation.
For information concerning the misidentification of a potential opposer during an extension of time to oppose, see TBMP § 206.03.
For information concerning motions for substitution of party plaintiff on grounds of misidentification, see TBMP § 512.04.
NOTES:
1. 37 C.F.R. § 2.102(b). See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993).
2. See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (individual employee who filed extension request a different legal entity than employer who filed notice of opposition and, thus, cannot be considered identified through mistake); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error resulting in identification of different legal entity was not a "mistake" within the meaning of the rule).
Cf. William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) (motion to substitute party that acquired mark from opposer prior to commencement of proceeding granted where opposition had been mistakenly filed in name of original owner); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition).
Cf. also TMEP §803.06 and TMEP § 1201.02(c); Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1640 (TTAB 1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (substitution allowed where, after opposition instituted, court determined that attempted incorporation of applicant was legally defective; three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark).
303.05(d) Misidentification of Applicant or Respondent
If a notice of opposition is filed against a mark where the applicant has been inadvertently misidentified in the application, the opposition will nevertheless be instituted and the real party in interest may be substituted for the named defendant during the opposition proceeding. [ Note 1.] Likewise, where a petition to cancel is filed against a registrant that has been inadvertently misidentified in the registration, the real party in interest may be substituted for the named defendant.
For information regarding applicant’s ability to correct a defect in the name or legal entity in the application, see TBMP § 512.04 and TMEP § 1201.02(c).
NOTES:
1. See Fed. R. Civ. P. 17(a); 37 C.F.R. § 2.116. See also Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark where, after opposition instituted, court in related civil proceeding determined that attempted incorporation of applicant was legally defective). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) (application void ab initio where two separate commercial entities were in existence on application filing date and application was filed in name of wrong entity); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (application filed by corporation which was not the owner of the mark void ab initio); Societe Civile des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6 USPQ2d 1205, 1210 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise).
303.06 Joint Opposers or Petitioners
Two or more parties may file a notice of opposition or a petition for cancellation jointly. However, the required fee must be submitted for each party joined as opposer or petitioner for each class in the application for which registration is opposed or for each class in the registration for which cancellation is sought. See TBMP § 308. [ Note 1.] For information concerning the filing of an opposition by two or more parties jointly where the notice of opposition is filed during an extension of time obtained by only one of the parties, see TBMP § 303.05.
Please Note: In ESTTA, all parties must be identified during the filing process in order for the proper fees to be charged for each party opposer or petitioner.
When parties file jointly, the notice of opposition or petition for cancellation must name each party joined as plaintiff. In addition, the notice of opposition or petition for cancellation should include allegations concerning the entitlement to a statutory cause of action (previously referred to as "standing") of each party plaintiff and the ground or grounds for opposition or cancellation. See TBMP § 309.03(b) and TBMP § 309.03(c) for a discussion of entitlement to a statutory cause of action and grounds for oppositions and cancellations. If the case is ultimately determined on the merits, rather than by default, withdrawal, stipulation, etc., any joint plaintiff whose entitlement to a statutory cause of action has not been proved cannot prevail, even though a ground for opposition or cancellation has been proved. [ Note 2.]
On the other hand, the fact that two or more parties may have an interest in a mark to be pleaded in a notice of opposition, or a petition for cancellation, does not mean that each such party must be joined as opposer, or petitioner. Joint filing is elective, not mandatory. [ Note 3.]
NOTES:
1. See 37 C.F.R. § 2.101(d) and 37 C.F.R. § 2.111(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009) (second petitioner not added as party plaintiff due to failure to pay additional fee); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee was not permitted to join as co-opposer after notice of opposition was filed, but even if permitted, would have had to submit fee). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("With opposers, regardless of the basis of the opposition application, the opposers identified in the ESTTA cover sheet determine the fees paid through ESTTA. Any additional opposers named only in the accompanying statement, for whom no fees have been paid, will not be part of the proceeding, regardless of the filing basis of the opposed application.").
2. See General Mills, Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1594 n.12 (TTAB 2011) ("Where there are multiple plaintiffs, each plaintiff must prove its standing and, in the case of likelihood of confusion and dilution claims, prior use."), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (of three joint opposers, owner of registration and its licensee as user of marks had real interest in proceeding, but opposer who only held software copyright had no standing and was given no further consideration). See also Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (Board found that one of the two opposers did not prove standing).
3. See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1627 (TTAB 1992) (respondent’s motion to dismiss and its alternative motion to join petitioner’s parent as owner of pleaded registrations and real party in interest denied since issue concerned what rights petitioner has in pleaded marks vis-à-vis respondent, not anyone else). See also Sun Valley Company Inc. v. Sun Valley Manufacturing Co., 167 USPQ 304, 310 (TTAB 1970) ("It is illogical to require that all parties that could possibly be injured by a registration be joined as parties to a cancellation or opposition proceeding before any one party can seek relief from the registration of a mark. This position is contrary to the specific provisions of Sections 13 and 14 of the Statute which provide that ‘any person’ who believes that he is or would be damaged by the registration of a mark is a proper party to file an opposition or a petition to cancel.").